Oil States Briefing: The Chancery-at-Law

Recurring Patently-O contributor Ned Heller has filed his brief in support of petitioners in the Oil States case. Heller represented MCM v. HP in its parallel bid for consideration of the Article III issues. [16-712 tsac Brief][Filed on behalf of Alliacence where Heller is Counsel]

The basic argument is historic — Inventors had a right to a trial by jury prior to 1791; those rights were guaranteed by the Seventh Amendment of the US Constitution; and Congress cannot now eliminate those established rights.

Heller reflects upon the remedy of scire faciasthat was at times commenced in the Chancery court. As the law historians brief reflects, in this particular, the Chancery action operated as a common law court (rather than a court of equity) — “the Chancellor at all times was acting with his ordinary, common law powers, not his extraordinary, equitable powers.” Thus, a scire facias action is also subject to the right of Jury Trial.

Because Inter Partes Review is effectively scire facias, it is improper without a jury trial.

[IPR] provides the same remedy, revocation, and the same grounds, invalidity as do scire facias, albeit, limited only to the claims challenged. Both are contested proceedings. Both begin with a petition by an interested party to the government. The common law proceeding was pursued in the name of the King, but the real party in interest was the petitioner who had to post a very large bond to pay the attorney’s fees of the patent owner.

Because IPR does not provide a jury trial, the statute authorizing IPR is unconstitutional.

Heller’s brief delves into the “public rights” debate and argues that argument is a red herring. Regardless of the statutory basis of patent rights, a contested revocation proceeding has a right to a jury trial because it had such a right at common law in England in 1791.

Heller does offers an upper-cut to the Government’s argument at the petition stage:

Because they were filed in Chancery, the government has argued that the actions were equitable (apparently not even knowing that Chancery had a law side) thereby providing no basis for a Seventh Amendment right.

The law historians brief along with Heller’s brief here begin to nail down this historical point. “[E]quity could not and did not revoke patents for invalidity since an adequate remedy at law was available.”

Regarding the privy council’s ability to cancel patents without jury trial. Heller argues that longstanding political battle between the king and courts effectively ended in the 1750’s – in favor of a common law courts. However, in 1779, the Privy Council did cancel one last patent – this one on National Security grounds. (England needed the patented cannons to conduct war against the American colonies).

More amicus briefs in this important case are expected this week.

= = = = =

A key point in the briefs so far is that IPR is substantially parallel to litigation. However, in the very recent Cuozzo decision, the Supreme Court held that in “significant respects, inter partes review is less like a judicial proceeding and more like a specialized agency proceeding.” An upcoming amicus would do well to address this point.

112 thoughts on “Oil States Briefing: The Chancery-at-Law”

Problem has always been the same 16th century or 18th century or 21st century : Greed !

Only the names of the companies and people are different. Be it East India Company OR Google both want unlimited power to do anything they desire without consequences.

New Google’s slogan – Don’t be evil. That’s our job.!

Google Lee ! : USPTO / PTAB : We are running a fraud : USPTO charges $5000 to an inventor and give him a patent after 5 years, then PTAB charges $25,000 to the infringer and to take away that same patent in 18 months.

Banksy is one of my favorite artists, with memorable works of which SHOP UNTIL YOU DROP is one of my favorites and arguably a work of genius, closely followed by SORRY. THE LIFESTYLE YOU ORDERED IS CURRENTLY OUT OF STOCK. His image of STEVE JOBS with a sack of belongings over his shoulder in a camp for the refugees entering Britain from France is telling, especially as his father was born in Syria and emigrated into the US. But I cannot equate a PEE-ER with a PEER and cannot regard this as one of Banksy’s best works.

And though a devoted student of UK IP law, I am a little skeptical (excuse the word!) that the situation in the UK in the mid- and late 18th century has anything relevant to say about the current problem in the US.

I am a little skeptical… that the situation in the UK in the mid- and late 18th century has anything relevant to say about the current problem in the US.

Probably not, but it is a goofy conceit of our VII amendment law that we must use juries today in any circumstance that you folks would have used them in 1791. It is a goofy way to run a justice system, but once the words go into your constitution, you have to give them effect. I would just as soon seen the VII amendment repealed, but it is long down on my list of constitutional provisions to repeal (well after “each state shall have at least one representative” and “two senators from each state” and “a number of electors, equal to the whole number of Senators and Representatives”).

There are some situations in which the common law of England as of a certain date is relevant to the current interpretation of the law. For example, the Virginia Constitution has a phrase that says something to the effect that if no Virginia law covers the situation, then the common law of England as of the date the Va Constitution was adopted applies. This came into play when the U.S. Supreme Court ruled in a case, not involving Virginia, that a jury in felony trials could not consist only of 6 jurors. Well, that had also been the law in Virginia, now rendered void by the USSC action. So, what law applied? After all, can’t just stop having trials until the Va General Assembly could take up the matter, especially since the Va Gen. Assembly basically met every other year except for a 6-week session in the off years. Turns out they had to go to the common law of England as of @1776 (I’m uncertain of the date), and lo and behold, the common law of England required 12 jurors. So that became the legal makeup of the felony jury trials. At the next meeting of the Va Gen. Assembly, the requirement for 12 jurors was codified.

Problem has always been the same 16th century or 18th century or 21st century : Greed !

Only the names of the companies and people are different. Be it East India Company OR Google both want unlimited power to do anything they desire without consequences.

New Google’s slogan – Don’t be evil. That’s our job.!

Google Lee ! : USPTO / PTAB : We are running a fraud : USPTO charges $5000 to an inventor and give him a patent after 5 years, then PTAB charges $25,000 to the infringer and to take away that same patent in 18 months.

Well good job Ned. It is pretty confusing figuring out the court of olde’ England and the split in law and equity – and the archaic form of writing. At one passage, the lights came on – hey that’s like our Art III trial court, tax court and claims court.

Don’t know how people can comment here so negatively about the natural rights doctrine of Locke. If you don’t understand that – you are really missing out on the majesty (little pun there) of the American Experiment.

Life: everyone is entitled to live.
Liberty: everyone is entitled to do anything they want to so long as it doesn’t conflict with the first right.
Estate: everyone is entitled to own all they create or gain through gift or trade so long as it doesn’t conflict with the first two rights.

It must have seemed so straightforward in a world of unlimited resources (of course, there were those pesky primitive savages that needed to be exterminated, as “God” surely intended).

I’m also sure that anything remotely resembling our patent system is completely inconsistent with these “principles”. How do the glibertarians manage to do their mental somersaults and reach the opposite conclusion? I presume the answer is the usual one: they’re blinded by greed and self-entitlement.

iwasthere, there may be better briefs filed by others, but I wanted my brief to be the one that was the most informative on the English court system of that era, and why, for example legal issues were tried at law and not at equity. It was a constitutional problem, part of the struggle of the commons vs. the power of the Kings. It is the entire basis for the 7th Amendment as was made clear in Scott v. Neely.

Would it not be even better to increase the quality of initial patent examination so that bad claims don’t make it through so often, thus preserving the presumption of validity?

Yes, that would be super awesome. But any procedures put in place to make that happen will be railed against mercilessly by the same patent maximalists who rail against literally *everything* that makes it more difficult (or more expensive) for them to obtain or “monetize” their junk. This is an absolute given.

I mean do you really think the maximalists want their logic patents to be examined rigorously? By a PTO with an actual database and system for examining such patents? And a searchable indexable format for storing prior art and newly disclosed logic and algorithms? They’ve had literally 40 years to come up with something and they haven’t come up with squat. But they love to tell us that they’re all about “patent quality.”

Who believes that the maximalists care about “patent quality”? Anyone? If so, I’ve got a bridge to sell you.

Lest the facts get buried in a mountain of froth: patents are still being filed and granted like there’s no tomorrow and I have work coming out of my ears.

Strong, non-vaporous patents backed up with data and results of tests performed by thoughtful skilled scientists and or researchers with the help of thoughtful forward-looking attorneys are still very valuable.

Lesser patents are less valuable (twas ever thus). Junk is junk and it’s thankfully easier to get rid of that junk now than ever before.

The junk peddlers are upset by these change in circumstances because they really enjoyed the lifestyle of “monetizing” junk. And they feel entitled to that lifestyle (I am happy to explain why if you’d like to know — just ask!).

We now return to you the regularly scheduled k 0 0 k 0 0 bananas apoplectic ranting about “Google trying to burn the system down” and “patents are worthless”.

Ned, prompted by all these comments about the value of property in inventions, there’s a question in my mind. Forgive my ignorance, but when the USPTO is steadfast in declining to issue you with a patent for your precious invention, should you be able to take the USPTO to court and there enjoy a trial by a jury of your peers, of the issue whether the USPTO is right to hold out against you?

If you were not obsessed with generating non-substantive personal insults you could have simply told Max that PTO rejected patent applicants already have a right to an E.D. VA District Court civil suit under 35 USC 145.

[A]pplicants already have a right to an E.D. VA District Court civil suit under 35 USC 145.

That observation, while accurate as far as it goes, does not really speak to Max’s point about Ned’s complaint. Ned insists on a right to a jury trial. A suit under §145 gets you into court, but it does not get you a jury, because §145 is only a limited concession of sovereign immunity, and the sovereign does not consent to a jury.

I agree that Anon’s #12.1 could be phrased more politely, but it does at least speak to the point that Max thinks that he is making. U.S. law does, for better or worse, treat pending claims differently from granted claims via-à-vis their status as “property.”

Marsh v. Nichols, Shepherd & Co., 128 U.S. 605, 612 (1888) (“Until the patent is issued, there is no property right in it; that is, no such right as the inventor can enforce.”)

Brenner v. Ebbert, 398 F.2d 762, 764 (D.C. Cir. 1968) (“We have considerable doubt whether appellees’ allowed but unissued patent is `property’ as that term is used in the fifth amendment.”).

De Ferranti v. Lyndmark, 30 App. D.C. 417, at *5 (1908) (“[I]n a patent no vested right of which the applicant cannot be deprived is acquired under the preliminary proceedings leading up to its issuance.”).

Once publish, the inventor has provided his quid obligating the PTO to provide the quo. There is, in this obligation, a property.

Two responses:

(1) The idea that publication obligates the PTO to grant strikes me as strange. If you are claiming something unpatentable, the PTO has no obligation to grant (indeed, an obligation to deny), even if the application has published. If you are claiming only patentable claims, the PTO has an obligation to grant, even if there has been no publication. The two incidents of “publish” and “grant” seem to me to be largely independent of each other.

(2) Even if it were true that publication begets obligation, and obligation is property, that really does not speak to the matter at issue. An “inchoate right” is a property right, to be sure, but only (at the risk of belaboring the obvious) an inchoate property right. There is nothing about this right that can be enforced by a suit against the PTO.

Also waiver, since U.S. non-publication is available and was not requested.
Filing in almost any other major country would also be a waiver of application secrecy since application publication there is mandatory.

Mr. Morgan, you find fault with my tone and then turn around and greviously err as to substantive content.

Mind you, as further illustrated by Greg, MY content is on point while yours, well not so much.

I would also kindly remind you that the diffeeence between a mere application and a granted patent is extremely important under the Constitutional evaluation of the system that you would rather cheer lead for (than to actually engage ANY discussion on the merits).

You do realize where else THAT difference is critical, right?

If you want to discuss the merits then of the point that I included with my rough language, then do so.

But please do not pretend as you have done that I provided no substantive points.

Anon or Ned, Anon states that “non-publication is NOT an option under many conditions.” [I had already covered the statutory one – equivalent foreign filings.] Seriously, what are some others of those many other non-USPTO-publication option conditions? [That the inventor or the owner of his application has already published in a non-PTO publication, or made a non-confidential disclosure, is of course also a waiver of secrecy rights.]

Hm, I would quibble with the idea that the inchoate rights doctrine is “bottom basement common knowledge.” Rather, it would be more accurately characterized as an obscure area of the law that almost never comes up in cases, and which is only uncertainly still valid after the 1952 codification. Nevertheless, it is, I concede, relevant to Max’s point.

I, for one, had never heard of the inchoate rights doctrine until you wholloped me over the head with it, but once introduced to the subject it did prove an interesting area about which to learn. Thanks for reminding us all of this particular feature of U.S. law.

Look up inchoate rights – and please note the abundant fact that it is only at the initial point of grant that your full legal property rights inure. Come MaxDrei – this is bottom basement common knowledge.

Never mind that down below “anon” is leaping to the defense of his glibertarian peer who insists that your “inventive rights” “inure” (LOL) the moment they are “originated” in your super awesome brain.

That said, “bottom basement knowledge” is probably a perfect description for this super deep concept.

The problem with IPRs is that its just too easy to invalidate a patent. When issued patents are on no better ground than patent applications, the issued patent has no meaning. There’s not enough finality in the issued patent. A patentee goes through all the hoops, pays a lot of money, discloses possibly valuable private information, and then makes business decisions that rely on their patent (with a ribbon on it). Then the PTO takes it away in a proceeding where the patentee has even less protection than during the examination phase and with few of the procedural guarantees of an Article III trial. How fair is that? Patentees need a measure of finality, just like in many other areas of the legal system.

To me, that’s what the CAFC has lost sight of: the efficiency of certainty and finality. Yes, the PTO makes mistakes, but significantly weakening every issued U.S. patent because of a few bad apples … there are many costs besides some patentees losing their patents.

Until the UK signed up to the European Patent Convention its patent system ran on the notion that obviousness was too difficult for ex Parte examination, pre-issue at the PTO. The Office was strict on clarity and novelty though.

The result was a stream of patents issuing on novel subject matter, expressed with perfect clarity. Everybody knew that if and when the patent were to be asserted, there would be a set to over the obviousness issue.

The system was incredibly efficient and met the needs of its users.

But Germany, didn’t like it because it supposed that the PTO could settle the obviousness issue before granting the patent. How naive is that then?

It is not clear to me that there is any effort in Max’s post to “force” anyone to choose anything at all. He is simply responding to the point made in #11, viz that a mechanism for easy invalidation creates “inefficiency.” He is pointing out that such systems have existed elsewhere in the world, and nonetheless operated efficiently. That seems a very germane observation if the argument against IPRs if founded on their putative inefficiency.

You do understand the difference, do you not, between providing relevant facts so that one can make an informed choice, and forcing someone to choose something? It does not strike me as particularly “naive” to note the difference.

What sort of coercive power does Max bring to bear in #11.1? Are there hypnotic waves emanating out of his prose?

I would say for your question that it is only half, or less, naive. Because the EPO does provide an inexpensive [if often rather slow and easily claim amended around] inter partes EPO “opposition” system. But it is effective only for those parties that use it. Which is only those parties paying for watches for allowed claims that can possibly be guessed to possibly impact future products, and then paying for those oppositions.

Max, I think you also get the point that the German system was a central claiming system where the claims were little bit fuzzy to say the least. The beauty of the English system lay in the clarity of the claims.

I wish the American system were as beautiful as the English system used to be. The greatest single fault of the American system is lack of clarity in the claims.

The problem with IPRs is that its just too easy to invalidate a patent.

How can we meaningfully claim to know this? What are the objective indicia that we should consult to know that it is either too difficult or too easy to invalidate? In what observable phenomena will this miscalibration manifest?

When issued patents are on no better ground than patent applications, the issued patent has no meaning.

Well, yes, if issued patents were no better than pending application, I agree that there would be no meaning to a patent. That has never been the case in the U.S., however, not even post-AIA. An issued patent can be enforced against another party; a pending application cannot. Therefore, there is always some manner in which an issued patent is better than a pending application.

A patentee goes through all the hoops, pays a lot of money, discloses possibly valuable private information, and then makes business decisions that rely on their patent (with a ribbon on it).

You can turn this argument inside out like a sock. An infringer also pays a lot of money and commits time and other resources to a given business endeavor on the view that a given patent is not valid. If you raise the transactions costs for invalidating that patent, you simply place an obstacle in the way of legitimate and lawful business. Granting bad patents is just as bad as revoking good patents. Your complaint only works by selectively remembering the injustice done to the rightful patentees, while conveniently forgetting the harm done by wrongful patentees to legitimate actors practicing the prior art.

Then the PTO takes it away in a proceeding where the patentee has even less protection than during the examination phase and with few of the procedural guarantees of an Article III trial. How fair is that?

I agree that it is unfair. At a minimum, a patentee in IPR should be able to amend claims as of right. To say that IPRs are not as fair as they should be as presently constituted, however, is not nearly the same as to say that they should be simply blotted out of the system and replaced with nothing. There needs to be some sort of (relatively) inexpensive and quick mechanism for tanking bad claims.

Any system administered by humans needs a mechanism for correcting mistakes. If it is to serve any useful purpose, that system must also be inexpensive and accessible enough as to be of use to a broad mass of persons, and not just a few large corporations with the sort of litigation budget necessary to trudge through lengthy discovery as presently provided in our FRCP.

If you raise the transactions costs for invalidating that patent, you simply place an obstacle in the way of legitimate and lawful business.

Hm, that could be more clear. How about “If that patent genuinely is invalid, and if you raise the transactions costs for invalidating that patent, you simply place an obstacle in the way of legitimate and lawful business.”

Well put, but missing another demonstrated consequence. The establishment of a business model of filing large numbers of patent suits to obtain settlement payments from the 95% of defendants willing to pay just to avoid such transaction costs.

It seems to me to be impossible to contest the characterization of “over hyped.” This claim has no objective content, and is therefore entirely unfalsifiable.

However, it is quite easy to contest the assertion that “everyone is aware by now” that Mr. Morgan is describing a “b00gyman.” I can assure you that not everyone is aware of this. Indeed, there is a good bit of peer-reviewed, published literature to back up Mr. Morgan’s thesis.

The point of a patent system is to encourage innovation. If a given epiphenomenon emerges out of the patent system to discourage innovation, then that aspect of the patent system needs to be seriously reconsidered. If it can be trimmed without affecting the rest of the system, it should be. IPRs represent an effort to achieve such a surgical trimming.

As you are ever reminding us, the ends cannot always justify the means. I am coming to see that IPRs, while well intentioned in intent, may yet run afoul of constitutional limits on means. If so, then they must be replaced. It would be a detriment to the well functioning of the patent system, however, simply to say “they are unconstitutional, so we must get rid of them, and return exactly to the status quo ante.”

Greg, perchance have you had a chance to read my brief yet, particularly the appendix attaching Rex v. Arkwright?

There is absolutely no question that if somebody over claimed or provided an insufficient specification as did Arkwright that he would be taken to the woodshed by the government in a scire facias. The government would not allow someone to wield an invalid patent against English subjects.

But, and trust me on this, there would only be one scire facias ever brought against the patent by the government. Just one.

Greg said: “There needs to be some sort of (relatively) inexpensive and quick mechanism for tanking bad claims.”

Would it not be even better to increase the quality of initial patent examination so that bad claims don’t make it through so often, thus preserving the presumption of validity?

To be very clear, I am not here to criticize the PTO, PTO management, or the examining corps, all of whom have a very difficult job. But it is abundantly clear to anyone that spends more than a minimal amount of time prosecuting applications before the PTO that the current processes in place have resulted in a system where are a large number of Office Actions are of exceedingly poor quality. There are numerous reasons for this, including budget issues, incentive issues, and even the reality that the task of searching, particular in some technology areas, is borderline impossible with the provided tools. However, the end result is unquestionable: poor examination.

Sometimes this poor examination results in innovative patent claims facing clearly bad rejections. Sometimes this poor examination results in bad patent claims issuing when they should not. The IPR process is a post hoc fix that attempts to address the latter problem. But it is just a band-aid fix, and does nothing to address the underlying issue.

And so my question to you is, would it not be better to try to address the actual issue of poor examination quality? Isn’t an argument regarding the necessity of the IPR process itself an acknowledgment that examination quality is poor? Isn’t it preferable to try to fix the system so that the PTO can get it right the first time more often, instead of trying to band-aid the system by giving the PTO a second chance to get it right?

It’s even theoretically possible that giving the PTO this second chance may decrease the quality of initial examination, as there may be less concern with letting bad patents out the door if there will often be a second bite at the apple.

Would it not be even better to increase the quality of initial patent examination so that bad claims don’t make it through so often, thus preserving the presumption of validity?

Two brief responses and a more substantive third point:

(1) “[I]ncreas[iing] the quality of initial patent examination so that bad claims don’t make it through so often…,” is a “sort of (relatively) inexpensive and quick mechanism for tanking bad claims.” In other words, better examination is not an alternative to what I am describing. It is just one mechanism among many for achieving what I am describing.

(2) As I said before, any system run by humans will involve mistakes, and therefore will need a mechanism for correcting mistakes. Indeed, some legally correct rejections are not even possible during prosecution (e.g., certain rejections based on what the pre-AIA statute would call “§102(e) art” that has not yet published at the time of examination), so it is not even a “mistake” per se if the examiner fails to make a rejection based on that art. Nevertheless, in such cases, the claim is eventually invalid all the same, and there needs to be some sort of mechanism for clearing that claim off the books if it stands in the way of otherwise legitimate commerce.

(3) In summary of points #1 & #2 above, I am all in favor of better examination, but better examination can never be the whole solution.

That said, consider me skeptical that any more than marginal improvement in examination quality is really achievable in practice. The PTO runs on fees, and people pay fees to get patents, not to get office actions. If the PTO were to get a reputation as really strict, its volume of applications filed would shrink accordingly (consider, for example, how many fewer applications the EPO takes in each year compared to the U.S., despite the fact that the EU and US economies are roughly equal in size).

In other words, in order to convince the PTO to increase the rigor of examination, you would also need to convince the PTO to reconcile itself to a smaller budget. This is not a state of affairs that comes naturally to U.S. administrative agencies. Alternatively, you would have to convince the Congress to fund the PTO out of the general treasury, instead of out of PTO fee income. This is a state of affairs that does not come naturally to the House of Representatives.

One way or the other, you need to push against very strong political or administrative tendencies to get to this hypothetical improved examination quality. I simply doubt that there exists a sufficiently motivated and organized entity to do this pushing, or to sustain it for the duration necessary to make any difference.

It is (politically speaking) a much easier lift to convince the PTO to create another program to take in more fees to correct post grant the mistakes that they made pre-grant, than it is to convince the PTO to apply the same sort of rigor at the front end during examination. There is, also, far less political pushback against a post-grant correction scheme because it does not require any additional expenditures from the public fisc (the petitioners pay the freight for administering the IPR system).

When you have one solution to the problem of poor quality claims that is politically hard to achieve (improved examination quality) and another that is politically easy to achieve (IPRs), the easy will win out 99 times out of 100.

I think there are cost effective ways to improve quality. Too many examiners perform inadequate searches. Teach them how to do it better. I believe that Examiners still have incentives to allow applications. Examiner compensation should have nothing to do with disposition of cases. Coupled with Primary Examiners’ minimal oversight and it’s a big problem.

I get what you are saying about fixing mistakes by the PTO, but courts make mistakes too (in the sense of not reaching the right verdict/judgment). Yet the legal system is designed to make it very difficult to revisit matters that have been fully litigated and resolved. Why? Mostly for efficiency, no?

[C]ourts make mistakes too…[, y]et the legal system is designed to make it very difficult to revisit matters that have been fully litigated and resolved. Why? Mostly for efficiency, no?

This is a good point. If this is what you mean when you speak of IPRs being inefficient, then I grant the point. My only response would be that efficiency is a good, but it is not the only good. My gut intuition is that the status quo ante gave us more efficiency than was necessary at the cost of fairness, and that the addition of IPRs recalibrates the balance slightly. The optimal balance in that trade-off is a matter of personal preferences, and therefore I can no more prove that the new balance is optimal than I can prove that peaches taste better than nectarines.

You make some solid points, but the reality is that a large number of office actions coming out of the patent office are really bad in ways that at first glance seem like they should be fixable with some reasonable process and incentive changes.

In many art units, a large number of office actions amount to little more than cut and pasting of claim language with citations to various prior art references and minimal explanation of how the references anticipate or render obvious the claim. Some office actions cite to nearly irrelevant prior art references simply because the same word or term is used in a completely different context.

On the flip side, many office actions cite one or more solid prior art references but then go on to make nonsensical or overly complicated rejections. It is not uncommon to see an office action combining two or three references just to allege that something is obvious which was already taught by the primary reference.

The office has articulated some clear rationales for obviousness, but in practice these are rarely applied or utilized by examiners. For example, I am surprised that rejections are not more often based on the proposition that it would have been obvious to combine prior art elements according to known methods to yield predictable results. This could be the sword used to strike down MM’s dreaded “logic patents”, but instead TC 3600 seems to have decided that the patent office has formed an entire technology center for subject matter that is patent ineligible (makes perfect sense).

Most tellingly, in trying to engage with examiners during interviews, it is clear that although many examiners are making an honest effort to examine the applications before them and engage on the issues, some are perfectly content to send out office actions that make no sense so long as no one above them can easily determine that this is the case. Further, in both camps there exist examiners who appear to be lacking the necessary technical and legal knowledge to actually engage on the merits.

Patent office executives know all of this. It isn’t a secret; it is plainly obvious to anyone who has spent a lot of time working around the patent office.

To be clear, the patent bar is likely going to have to make some changes to allow for improved examination quality at an affordable cost. For example, filing a 70 page patent application and then later focusing on a minor feature disclosed somewhere in the 70 pages as a point of distinction over a cited prior art reference, when there is no apparent reason why the feature should be important, does not feel like something that should be part of routine practice, yet it is rather common.

It doesn’t feel unreasonable to give the written description requirement more teeth and require an applicant to more specifically flag innovative features or functionality for which a patent application is being filed, but in my discussions of this I have found that many members of the patent bar, especially older members, find this idea disconcerting.

Similarly, although I understand why examination support documents were so disfavored, it doesn’t feel like it was a wholly unreasonable thing to expect.

The bottom line is that it’s a bit ridiculous to file a voluminous patent application without distinguishing what’s new from what’s old, and then expect the patent office to do this entire task for you. As a lawyer it’s WAYYYY easier, but that doesn’t mean it’s unreasonable for the patent office to expect you to at least make a good faith effort to identify what is conventional and what is innovative.

Further, as a far more simpler issue, there is no good reason why you need to get three independent claims examined for the basic filing fee. Similarly, there is no good reason why you need to be able to present 20 total claims for the basic filing fee.

The current examination process is showing some signs that it isn’t working well. Change is clearly needed, and using IPRs as a band-aid to address some of the symptoms doesn’t change that fact. To the extent that it obviates a serious discussion of the underlying issues, it may make it harder to address and solve the actual problems.

[T]he reality is that a large number of office actions coming out of the patent office are really bad in ways that at first glance seem like they should be fixable with some reasonable process and incentive changes.

Brother, I have read enough doozies of office actions that I can hardly disagree here. However, if—when you talk of improved “quality of initial patent examination”—you mean “fewer screwy office actions” then you are really talking past the matter at hand.

IPRs do not exist to remedy valid claims that were wrongfully denied (which is the problem with screwy office actions). They exist to remedy invalid claims which ought never to have been granted. If you “improve” examination quality by making sure that examiners issue fewer bogus rejections, this really does nothing to make IPRs less necessary to the well functioning of the system.

“IPRs do not exist to remedy valid claims that were wrongfully denied (which is the problem with screwy office actions). They exist to remedy invalid claims which ought never to have been granted.”

But it’s really two sides of the same coin, right? Both of these are just symptoms of bad examination. I mean you can artificially reduce the number of bad patents being granted by just tamping down on the total number of patents being granted (ala the Dudas era, or current TC3600 practice), or you can cut down on bad rejections by having a ridiculously stringent framework for making rejections (ala the pre-KSR era), but at the end of the day you ideally want to just improve the quality of examination so that you have both less bad allowances and less bad rejections.

If you tolerate office actions that make no sense, you are implicitly sending a message that you don’t have to justify your reasoning for making decisions. This is why you can go to an interview with an examiner and have to listen to a summary of “the law” that bears no resemblance to actual reality. It is surprising how many examiners seemingly operate for years in their own reality without any course correction from above. I am not blaming PTO management for this, as it is a difficult problem, but it is undoubtedly a problem.

You also risk creating a system where examiners who do try to articulate rational arguments in their office actions are at a disadvantage production-wise as compared to examiners that are less concerned with quality.

The bottom line is that once you start to stray from the ideal of reasoned articulation of logical rejections, you introduce a slippery slope where examiners are incentivized to cut corners. This cuts both ways, and results in both bad allowances and bad rejections.

[A]t the end of the day you ideally want to just improve the quality of examination so that you have both less bad allowances and less bad rejections.

Sure, who can disagree with this?

Consider me skeptical, however, that any more than a marginal improvement over present practice is really possible. The EPO does (on average) a much better job searching the art, but an EPO application also costs a great deal more to obtain. I am dubious that one can improve the quality of the US search and examination to EPO levels without raising costs correspondingly. Merely pounding the table and demanding “quality” avails to very little.

Right now, the applicant pays for the up-front examination, and then the IPR challenger (i.e., someone who is motivated to care about the proper scope of the challenged patent and who brings into the process a practitioner’s familiarity with the art) pays the costs of correcting the PTO’s errors and omissions. If we are to do away with the IPR process by simply improving the upfront examination, then we will have to take the costs currently paid by the IPR petitioner and distribute those costs among applicants.

So, which do we prefer? A system where everyone pays a little more, or a system where those who have a reason to care pay a lot more? There is no “right” answer to this question, except that one of these options (the IPR option) is more politically popular than the other, and therefore the more achievable in practice.

I would, however, be delighted to be proven wrong in that assessment. If applicants can be persuaded to organize and sacrifice to achieve a better quality examination process (with the additional costs that such would entail), I would be pleased as punch to see it happen.

I feel like there are small, incremental changes that can move the needle a bit.

As an example, as I believe I noted previously in this thread, why do applicants need to have three independent claims examined for the basic filing fee? Why do you need multiple independent claims in a patent application at all? (As an aside, this leads to the mess that the word “invention” means a claimed invention, but is also used in a slightly different context to mean that an application can be restricted to a single “invention”.)

Why do applicants need twenty total claims examined for the basic filing fee? Do most applicants even use dependent claims in a meaningful way? In some art units: undoubtedly. In many art units: definitely not.

Patent applications are often complicated. Claims are often complicated. Writing an office action addressing them can be a complicated process. The more claims you have, the more issues can be raised, and the more time it can take to address them all. In a perfect world, every examiner would be able to perfectly address every claim limitation of every claim in every office action. In reality, the more issues you force an examiner to confront and address, the harder it is for the examiner to address them at a high level of quality.

As lawyers, we all know that when trying to address a complicated case, you generally don’t want to overwhelm your audience with a lot of arguments. You generally want to pick your best argument or arguments and focus on those. It is hard for anyone to parse and keep up with a lot of issues, and presenting less issues gives you a better chance to focus on the ones that matter.

And yet, when it comes to patent examination, the system for some reason expects patent examiners to be super-human and address and reject twenty different claims at a high level of quality. This is frequently unreasonable, and generally counter-productive.

Personally, I think that the arbitrary selection of 3/20 has a negative impact on all parties involved. For attorneys, it sometimes feels like there is pressure to include 3/20 (or close to it), or else you somehow aren’t getting your client full value for their filing fee. This pressure can sometimes be felt even though focusing on a single independent claim may well be more productive and allow you to focus all of the examiner’s attention on the issue that you want to focus on.

This is just one example, but there are others as well. Patent examination is an incredibly difficult problem. The USPTO does a tremendous job when faced with this incredibly difficult problem. In some ways, the surprising thing isn’t that patent examination has so many problems, it’s how well it does work given how hard the problem is.

But just because it’s a difficult problem and the patent office is doing a great job trying to solve it doesn’t mean there aren’t additional improvements that can be made. I think that right now there are some artificial constraints on the process in the form of unrealistic applicant expectations that make the process even harder than it should be. It’s an incredibly hard problem. It’s not unreasonable to change some applicant expectations in order to make the incredibly hard problem a bit easier.

Thank you anon. I think these issues are really hard, and I myself generally don’t claim to have any answers on the policy side, but I do think it’s productive to have an actual conversation about them. I enjoy hearing different viewpoints of various practitioners and other stakeholders, but unfortunately it sometimes can be difficult to carry on a substantive discussion in this forum.

JCD, this question of why PTO application prior art searches do not find the better prior art cited in IPRs has been raised many times. The simple answer is this: Who is going to pay for the many thousands of dollars prior art searching that the typical infringement-suit-defendant IPR petitioner does? Applicants would strongly object to paying such fees for every application. Multiply that large amount times roughly 500,000 applications a year and it is a very large expense burden on all applicants, illogical for the very small percentage of all patents that are ever asserted.